The North Face Apparel Corp. (“North Face”), which is well known for its outdoor clothing and sporting goods sold under THE NORTH FACE mark, recently made headlines by filing suit against nineteen-year old James Winkelmann (“Winkelmann”) for his use of THE SOUTH BUTT mark on outdoor clothing goods. The complaint names Winkelmann, his company The South Butt, LLC, and Williams Pharmacy, Inc., a chain of stores selling THE SOUTH BUTT goods. Both parties’ marks are pictured here.
In its complaint, North Face alleges defendants’ activities—specifically, the adoption of THE SOUTH BUTT mark, reverse half dome logo, and NEVER STOP RELAXING slogan—went beyond parody and descended into trademark infringement and dilution of its marks. North Face notes that products bearing THE SOUTH BUTT mark, which are nearly identical in appearance to those produced by North Face, generated over $100,000 in sales in November 2009 alone, and that defendant Winkelmann offered to sell THE SOUTH BUTT mark and business to North Face for $1 million dollars.
In a surprisingly cocky response to the complaint, joint-defendants Winkelmann and The South Butt, LLC relied on a parody defense, and declared that no confusion is likely to occur as “the consuming public is well aware of the difference between a face and a butt.” Defendants’ glib tone and coy language used throughout its Answer identifies Winkelmann as a “cherubic teenager…described as a handsome cross between Mad Magazine’s Alfred E. Newman of ‘What Me Worry’ fame and Skippy the Punk from the Midwest,” defending against a “7 billion plus powerhouse” plaintiff attempting “to bully [him] out of the marketplace.” While defendants’ bold actions and cheeky manner may be distasteful, it is unclear whether they will be found to be unlawful. Trademark law does not prevent humor at a markholder’s expense. “[T]he requirement of trademark law is that a likely confusion of source, sponsorship or affiliation must be proven, which is not the same thing as a ‘right’ not to be made fun of.” J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §31:155 at 31-346 (4th ed. 2009).
Indeed, a parody defense will stand where the ordinary consumer views the parody use as a joke, thus eliminating any potential or actual trademark confusion. The most analogous case considering this issue appears to be Jordache Enterprises v. Hogg Wyld, Ltd., 625 F. Supp. 48, 227 U.S.P.Q. 794 (D.N.M. 1985) aff’d 828 F. 2d 1482, 4 U.S.P.Q.2d 1216 (10th Cir. 1987), in which the court considered whether use of the term LARDASHE combined with a smiling pig design, used in connection with plus sized jeans, infringed or diluted the JORDACHE mark as used in connection with a horse design for the same goods.
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The court noted preliminarily that the marks and their attendant images were “obviously different…. In contrast [to Jordache’s white letters and gold horse head] the Lardashe jeans have a large, brightly colored pig head and two hooves, giving the appearance that the pig is peering over the back pocket.” The court did not find that there was a likelihood of confusion, noting “our review of the record convinces us that the public will not associate LARDASHE jeans with the appellant or, if they do, they will only make the association because of the parody and not because they believe Jordache Enterprises, Inc. manufactures LARDASHE jeans.”
With respect to dilution, the court noted that parody defeats a claim of dilution where there is no: (1) injury to the value of the mark caused by actual or potential confusion; (2) injury resulting from use of the mark in a manner that tarnishes or appropriates the goodwill and reputation associated with plaintiff’s mark; or (3) diminution in the uniqueness and individuality of the mark. The court found prong one was unmet due to the lack of potential or actual confusion. Considering prong two, the court noted that when the marks are used on similar goods, proving tarnishment requires use of the mark in an illicit manner, since “It is unlikely that the public would assume that the same manufacturer would use quite different marks on substantially the same product.” The court further noted that no diminution was likely under prong three of its dilution inquiry: “[b]ecause of the parody aspect of LARDASHE, it is not likely that public identification of JORDACHE with the plaintiff will be eroded; indeed, parody tends to increase public identification of a plaintiff’s mark with the plaintiff.” Notably, the court held, “[w]hile we do not hold that this type of tarnishment is established only where the Lanham Act likelihood of confusion test has been satisfied, the antidilution statute does require some showing that the public will associate both products with the same manufacturer.”
Thus, it seems that the North Face action will turn initially on whether the court finds the South Butt’s designs to be similar to a point to cause likelihood of confusion, or distinguishable as LARDASCHE and JORDACHE.